Amendments to the reissue dependent claims not broadening the scope of the invention
From Patentbarquestions
Q) Smartner’s Cell Phone (4.02.22p)
22. Patentee, Iam Smarter, filed and prosecuted his own nonprovisional patent
application on November 29, 1999, and received a patent for his novel cellular phone on
June 5, 2001. He was very eager to market his invention and spent the summer meeting
with potential licensees of his cellular phone patent. Throughout the summer of 2001, all
of the potential licensees expressed concern that the claim coverage that Smarter obtained
in his cellular phone patent was not broad enough to corner the market on this
technology, and therefore indicated to him that they feel it was not lucrative enough to
meet their financial aspirations. By the end of the summer, Smarter is discouraged. On
September 5, 2001, Smarter consults with you to find out if there is anything he can do at
this point to improve his ability to market his invention. At your consultation with
Smarter, you learn the foregoing, and that in his original patent application, Smarter had a
number of claims that were subjected to a restriction requirement, but were nonelected
and withdrawn from further consideration. You also learn that Smarter has no currently
pending application, that the specification discloses Smart’s invention more broadly than
he ever claimed, and that the claims, in fact, are narrower than the supporting disclosure
in the specification. Which of the following will be the best recommendation in
accordance with proper USTPO practice and procedure?
(A) Smarter should immediately file a divisional application under 37 CFR
1.53(b) including the nonelected claims that were subjected to a restriction
requirement in the nonprovisional application that issued as the patent.
(B) Smarter should file a reissue application under 35 U.S.C. § 251, including
the nonelected claims that were subjected to the restriction requirement in
the nonprovisional application that issued as the patent.
(C) Smarter should file a reissue application under 35 U.S.C. § 251,
broadening the scope of the claims of the issued patent, and then file a
divisional reissue application presenting only the nonelected claims that
were subjected to a restriction requirement in the nonprovisional
application which issued as the patent.
(D) Smarter should simultaneously file two separate reissue applications under
35 U.S.C. § 251, one including broadening amendments of the claims in
the original patent, and one including the nonelected claims that were
subjected to a restriction requirement in the nonprovisional application
which issued as the patent.
(E) Smarter should file a reissue application under 35 U.S.C. § 251 on or
before June 5, 2003, broadening the scope of the claims of the issued
patent.
ANSWER The forgotten divisional problem. Iam Smarter is outa luck here. E is all he’s got
left. No recapturing what he failed to file a divisional for even under the new
more flexible reissue approach.
